[Federal Register Volume 60, Number 193 (Thursday, October 5, 1995)]
[Notices]
[Pages 52170-52171]
From the Federal Register Online via the Government Publishing Office [www.gpo.gov]
[FR Doc No: 95-24777]



[[Page 52170]]


DEPARTMENT OF COMMERCE
Patent and Trademark Office
RIN 0651-XX04
[Docket No. 950921236-5236-01]


Interim Guidelines for Examination of Design Patent Applications 
for Computer-Generated Icons

AGENCY: Patent and Trademark Office, Commerce.

ACTION: Notice and request for public comments.

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SUMMARY: The Patent and Trademark Office (PTO) requests comments from 
any interested member of the public on interim guidelines that will be 
used by PTO personnel in their review of design patent applications for 
computer-generated icons. Because these guidelines govern internal 
practices, they are exempt from notice and comment rulemaking under 5 
U.S.C. 553(b)(A).

DATES: October 5, 1995.

    Written comments on the interim guidelines will be accepted by the 
PTO until November 6, 1995.
    Written comments will be available for public inspection on 
November 20, 1995, in Room 8D19 of Crystal Plaza 3, 2021 Jefferson 
Davis Highway, Arlington, Virginia. In addition, comments provided in 
machine-readable format will be available through anonymous file 
transfer protocol (ftp) via the Internet (address: comments.uspto.gov) 
and through the World Wide Web (address: www.uspto.gov).

ADDRESSES: Written comments should be addressed to the Assistant 
Commissioner for Patents, Washington, DC 20231, marked to the attention 
of John Kittle, Director, Group 1100/2900, Crystal Plaza 3, 8D19. 
Comments may also be submitted by telefax at (703) 305-3600 or by 
electronic mail through the INTERNET to ``[email protected].''

FOR FURTHER INFORMATION CONTACT:
John Kittle by telephone at (703) 308-1495 or by mail to his attention 
addressed to the Assistant Commissioner for Patents, Group 1100/2900, 
Washington, DC 20231.

SUPPLEMENTARY INFORMATION: Written comments should include the 
following information:

--Names and affiliation of the individual responding;
--An indication of whether the comments offered represent views of the 
respondent's organization or are the respondent's personal views; and
--If applicable, information on the respondent's organization, 
including the type of organization and general areas of interest.

    Parties presenting written comments are requested, where possible, 
to provide their comments in machine-readable format. Such submissions 
may be provided by electronic mail messages sent over the Internet, or 
on a 3.5'' floppy disk formatted for use in either a Macintosh or MS-
DOS based computer. Machine-readable submissions should be provided as 
unformatted text (e.g., ASCII or plain text).

    Dated: September 29, 1995.
Lawrence J. Goffney, Jr.,
Acting Assistant Secretary of Commerce and Acting Commissioner of 
Patents and Trademarks.

I. Interim Guidelines for Examination of Design Patent Applications for 
Computer-Generated Icons

    The following guidelines have been primarily developed to assist 
PTO personnel in determining whether design patent applications for 
computer-generated icons comply with the ``article of manufacture'' 
requirement of 35 U.S.C. 171.\1\

A. General Principle Governing Compliance with the ``Article of 
Manufacture'' Requirement

    A design for a computer-generated icon \2\ which is embodied in an 
article of manufacture is statutory subject matter for a design patent 
under Section 171. Thus, if an application claims a computer-generated 
icon embodied in a computer screen, monitor, other display panel, or a 
portion thereof,\3\ that is drawn in solid lines,\4\ the claim complies 
with the ``article of manufacture'' requirement of Section 171.

B. Procedures for Evaluating Whether Design Patent Applications Drawn 
to Computer-Generated Icons Comply With the ``Article of Manufacture'' 
Requirement

    PTO personnel shall adhere to the following procedures when 
reviewing design patent applications drawn to computer-generated icons 
for compliance with the ``article of manufacture'' requirement of 
Section 171.
    1. Read the entire disclosure to determine what the applicant 
claims as the design,\5\ and to determine whether the design is 
embodied in an article of manufacture. 37 CFR 1.71 and 1.152-54.
    a. Review the drawing to determine whether a computer screen, 
monitor, other display panel, or portion thereof, is depicted in solid 
lines. 37 CFR 1.152.
    b. Review the title to determine whether it clearly describes the 
claimed subject matter.\6\ 37 CFR 1.153.
    c. Review the specification to determine whether a characteristic 
feature statement is present. 37 CFR 1.71. If a characteristics feature 
statement is present, determine whether it describes the claimed 
subject matter as a computer-generated icon embodied in a computer 
screen, monitor, other display panel, or portion thereof.\7\
    2. If the drawing does not depict a computer-generated icon 
embodied in a computer screen, monitor, or a portion thereof, in solid 
lines, reject the claimed design under Section 171 and 35 U.S.C. 112, 
second paragraph, for failing to: (i) comply with the article of 
manufacture requirement; and (ii) particularly point out and distinctly 
claim the subject matter which the applicant regards as the 
invention.\8\
    a. If the disclosure as a whole does not suggest or describe \9\ 
the claimed subject matter as a computer-generated icon embodied in a 
computer screen, monitor, other display panel, or portion thereof, 
indicate that: (i) the claim is defective under Sections 171 and 112, 
second paragraph; and (ii) amendments to the written description, 
drawings and/or claim attempting to overcome the rejections will be 
rejected under 35 U.S.C. 112, first paragraph, for lack of written 
description and changes to the written description and drawings will be 
disapproved under 35 U.S.C. 132 as constituting new matter.
    b. if the disclosure as a whole suggests or describes the claimed 
subject matter as a computer-generated icon embodied in a computer 
screen, monitor, other display panel, or portion thereof, indicate that 
the drawing may be amended to overcome the rejections under Section 171 
and 112, second paragraph. Suggest amendments which would bring the 
claim into compliance with Section 171 and 112, second paragraph.
    3. Indicate all objections to the disclosure for failure to comply 
with the formal requirements of the Rules of Practice in Patent Case. 
37 CFR 1.71, 1.181-85, and 1.152-154. Suggest amendments which would 
bring the disclosure into compliance with the formal requirements of 
the Rules of Practice in Patent Cases.
    4. Upon response by applicant:
    a. Review applicant's arguments and any amendments;
    b. Approve entry of any amendments which have support in the 
original disclosure;
    c. Review all arguments and evidence of record to determine whether 
the drawing, title, and specification clearly disclose a computer-
generated icon embodied in a computer screen, 

[[Page 52171]]
monitor, other display panel, or portion thereof.
    5. If a preponderance of the evidence \10\ establishes that the 
computer-generated icon is embodied in a computer screen, monitor, 
other display panel, or portion thereof, withdraw the rejection under 
Sections 171 and 112, second paragraph.

II. Effect of the Interim Guidelines on Pending Design Applications 
Drawn to Computer-Generated Icons

    PTO personnel shall follow the procedures set forth in Section I of 
these Interim Guidelines when examining design patent applications 
drawn to computer-generated icons which are pending in the PTO as of 
the date of publication of these Interim Guidelines in the Federal 
Register.

III. Treatment of Type Fonts

    Traditionally, type fonts were generated by solid blocks from which 
each letter or symbol was produced. Consequently, the PTO has 
historically granted design patents drawn to type fonts. PTO personnel 
should not reject claims for type fonts under Section 171 for failure 
to comply with the ``article of manufacture'' requirement on the basis 
that more modern methods of typesetting, including computer-generation, 
do not require solid printing blocks. However, PTO personnel should 
treat applications specifically drawn to computer-generated type fonts 
in accordance with the procedures set forth in Section I of these 
Interim Guidelines.

IV. Notes

    1. Further procedures for search and examination of design 
patent applications to ensure compliance with all other conditions 
of patentability are found in the Manual of Patent Examining 
Procedure, Chapter 1500.
    2. Computer-generated icons, such as full screen displays and 
individual icons, are two-dimensional images which alone are surface 
ornamentation. See, e.g., Ex parte Strijland, 26 USPQ2d 1259, 1262 
(Bd. Pat App. & Int. 1992) (computer-generated icon alone is merely 
surface ornamentation).
    3. Since a patentable ``design is inseparable from the object to 
which it is applied and cannot exist alone merely as a scheme of 
surface ornamentation,'' a computer generated icon must be embodied 
in a computer screen, monitor, other display panel, or portion 
thereof, to satisfy Section 171. MPEP 1502.
    4. Strijland indicated that a computer-generated icon might be 
statutory subject matter if the solid-line icon is displayed on a 
computer screen which is shown as a broken-line drawing. 26 USPQ2d 
at 1263, 1266. However, since broken lines may be used to show 
visible environmental structure and not claim subject matter, 
representation of a computer screen, monitor, other display panel, 
or portion thereof, in broken lines does not satisfy Section 171. 
See, e.g., In re Zahn, 617 F.2d 261, 268, 204 USPQ 988, 995 (CCPA 
1980) (broken lines in design drawing show environmental structure, 
not claim). Broken lines may, however, be used to show other 
environmental structure, such as a central processing unit which 
contains equipment to operate the computer screen, monitor, or other 
display panel.
    5. Since the claim must be in formal terms to the design ``as 
shown, or as shown and described,'' the drawing provides the best 
description of the claim. 37 CFR 1.53.
    6. The following titles do not adequately describe a design for 
an article of manufacture under Section 171: ``computer icon;'' or 
``icon.'' On the other hand, the following titles do adequately 
describe a design for an article of manufacture under Section 171: 
``computer screen with an icon;'' ``display panel with a computer 
icon;'' ``portion of a computer screen with an icon image;'' 
``portion of a display panel with a computer icon image;'' ``portion 
of a display panel with a computer icon image;'' or ``portion of a 
monitor displayed with a computer icon image.''
    7. See McGrady v. Aspenglas Corp., 487 F. Supp. 859, 861, 208 
USPQ 242, 244 (S.D.N.Y. 1980) (descriptive statement in design 
patent application narrows claim scope).
    8. A computer screen, monitor, or other display panel is clearly 
described by showing a larger surface area than that immediately 
behind the icon image.
    9. A broken line drawing of a computer screen shown in the 
original disclosure suggests that the applicant originally had 
possession of the invention as embodied in an article of 
manufacture. Accordingly, the broken line drawing may be converted 
to a solid line drawing without violating the prohibition against 
new matter. See In re Rasmussen, 650 F.2d 1212, 1214, 211 USPQ 323, 
326 (CCPA 1981) (An applicant is entitled to claims as broad as the 
original disclosure will allow). However, a solid line drawing of a 
computer screen in the original disclosure may not be amended to a 
solid line drawing of only a portion of the computer screen without 
support in the original disclosure for such an amendment. See, e.g., 
Ballew v. Watson, 290 F.2d 353, 355, 129 USPQ 48, 50 (Comm'r Pat. 
the original disclosure and would ``create newness by the difference 
achieved'' is new matter).
    10. See In re Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d 1443, 1444 
(Fed. Cir. 1992) (``After evidence or argument is submitted by the 
applicant in response, patentability is determined on the totality 
of the record, by a preponderance of evidence with due consideration 
to persuasiveness of argument.'').

[FR Doc. 95-24777 Filed 10-4-95; 8:45 am]
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